Is the domain name #Costa .com worth one million dollars?

Costa means “coast” in Spanish; the matching domain Costa.com was registered in 1997, and yet 21 years later, an Italian company filed a UDRP against its registrant.

The Respondent was represented by ESQwire.com, sponsors of our publication, that provided the information below.

The Costa.com UDRP decision contains an important response by the WIPO panelists, regarding the domain’s asking price of $1,000,000 dollars:

“Turning to the Respondent’s asking price of USD 1 million for the disputed domain name, it is the view of the Panel that, where an investor in domain names legitimately registers a domain name which appreciates in value, it is reasonable to expect the registrant to seek the full price it believes to be achievable for the sale of that name. The Respondent made no approach to the Complainant for 21 years and quoted the price in question in response to an enquiry from the Complainant. In the view of the Panel, the facts of the case overall are more supportive of an inference that the Respondent registered the disputed domain name because of its Spanish dictionary meaning and in the hope that it would appreciate in value generally, rather than with the specific intention of selling it to the Complainant or a competitor of the Complainant for an excessive price.”

This is an acknowledgement that domain names can be traded for thousands and millions of dollars, far exceeding the registration costs. A domain name can thus be marketed and promoted on its valuation alone.

Is Costa.com worth a million dollars?

Due to its generic nature and 1.34 billion Google results, the asking price of one million dollars for Costa.com is in line with other generic domain name valuations.

In the Costa.com case, the Respondent never approached the Complainant, Costa Crociere S.P.A. of Genoa, Italy, to sell them the domain, during the course of 21 years.

Although the WIPO panel did not agree that the case deserved a finding of Reverse Domain Name Hijacking, the decision was to deny the Complainant’s request for a transfer.

Full details of this UDRP decision for Costa.com follow:

ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Costa Crociere S.P.A. v. Yoshiki Okada
Case No. D2018-1632

1. The Parties

The Complainant is Costa Crociere S.P.A. of Genoa, Italy, represented by Gianni, Origoni, Grippo, Cappelli & Partners, Italy.

The Respondent is Yoshiki Okada of Kobe, Japan, represented by ESQwire.com P.C., United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <costa.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2018. On July 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2018. On August 15, 2018, the Respondent requested a seven day extension of the time to file a Response. On August 16, 2018, the Center granted the Respondent an automatic four calendar day extension of the due date of the Response pursuant to the Rules, paragraph 5(b), and invited the Complainant to comment on the Respondent’s request for a further extension. The Complainant objected to the Respondent’s request on August 16, 2018. On August 17, 2018, in accordance with the Rules, paragraph 5(d), the Center granted the Respondent a further three calendar day extension of the due date of the Response, and confirmed that the new Response due date was August 23, 2018. The Response was filed with the Center on August 23, 2018.

The Respondent submitted an unsolicited supplemental filing on September 5, 2018, to which the Complainant responded on September 12, 2018.

The Center appointed Steven A. Maier, Anna Carabelli, and The Hon Neil Brown Q.C. as panelists in this matter on September 13, 2018. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Supplemental Filings

Having considered the Respondent’s stated reason for its submission of a supplemental filing, the Panel does not consider it necessary or appropriate to admit the supplemental filing of either party.

5. Factual Background

The Complainant is a company located in Genoa, Italy. It is an operator of cruise ships.

The Complainant is the owner of trademark registrations for, or including, the term COSTA. Those registrations include, for example:

– Brazil trademark number 812749596 for a device mark “C” with the word COSTA below, registered on July 4, 1989 in Class 39;

– Brazil trademark number 816856508 for a device mark COSTA CRUZEIROS, registered on September 20, 1994 in Class 39;

– European Union Trade Mark number 012907754 for the word mark COSTA, registered on October 17, 2014 in Classes 16, 39, 41 and 43.

The disputed domain name was registered on October 24, 1997.

The disputed domain name has resolved to a website at “www.costa.com” containing pay-per-click links, including links relating to cruise lines and cruise ships.

6. Parties’ Contentions

A. Complainant

The Complainant states that it is the leading cruise operator in Europe with over 70 years’ history of passenger transport. It states that it commenced cruising in 1948 and has continuously used the name and mark COSTA, which is the surname of its founder. It states that it serves 250 destinations worldwide, carried over two million passengers in 2017 and reported revenues of over EUR 3.6 billion in that year.

The Complainant submits that it was well known under the COSTA name and mark well before the registration of the disputed domain name in October 1997. It submits evidence of its activities since the 1970s including books, magazines, catalogues, leaflets, advertising, press coverage and other materials. The Complainant states that by 1995 it was the fifth largest international cruise operator, with almost 300,000 passengers and turnover of ITL 9.5 billion in that year.

The Complainant provides evidence that in May 1997 it was acquired by a United States group, Carnival Corporation & PLC, which it states is now the world’s largest cruise operator. The Complainant exhibits press coverage dated August and September 1997 which refers to this takeover, much of which comprises Italian newspaper reports, but which also includes an English language interview with the Complainant’s CEO published in “Travel Weekly”.

The Complainant refers to its trademark registrations and states that it also has numerous country-specific trademarks with the term COSTA as the “heart” of those trademarks, together with the relevant descriptive word for “cruises”, including COSTA CRUCEROS for Spanish-speaking markets, COSTA KREUZFAHRTEN for German-speaking markets, etc. The Complainant states that it had a number of additional trademarks including the term COSTA prior to October 1997 although these are now expired. It also states that it registered the domain name <costa.it> on February 3, 1997 .

The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It contends that, as a result of the matters referred to above, it enjoys significant registered and unregistered rights in trademarks comprising or including the term COSTA. It further submits that, where its trademarks include also a descriptive term such as “crociere”, this should be disregarded for the purposes of comparison.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that the Respondent it is not connected with the Complainant in any manner, has never been authorized by the Complainant to use its trademarks and has not been commonly known by the disputed domain name.

The Complainant disputes that the Respondent has made any bona fide use of the disputed domain name. The Complainant exhibits an example of the Respondent’s web page which contains links to “Costa”, “Cruise”, “Cruise Line”, “Cruise Ship” and “Small Cruise Ship”. The Complainant contends that none of these links resolves to any content or topic that provides information about the coast or coastal territories, but relate instead to the specific business of the Complainant. Furthermore, the Complainant provides evidence that at least one of the links in question resolves to a competitor of the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant contends that, owing to the wide international use, success and notoriety of the Complainant’s trademarks, it would be totally unreasonable to believe that the Respondent could have registered the disputed domain name for use in connection with any descriptive meaning, or for any reason other than to derive pay-per-click revenues by misleading Internet users into believing they were visiting the Complainant’s website.

The Complainant denies that the word “costa” is inherently descriptive in nature such as, e.g., the word “hotel”, and repeats that the Respondent does not in any event use the disputed domain name in connection with any descriptive meaning.

The Complainant submits that the Respondent knew or should have known of the Complainant at the date it registered the disputed domain name. The Complainant contends that, as a result of the Complainant’s trading activities, the mark COSTA had by that date acquired a secondary meaning according to which the general public would associate the term with cruise services. Further, the Complainant points to the publicity following the takeover of the Complainant by Carnival Corporation in May 1997 and to the fact that the Respondent registered the disputed domain name only a few months after this date.

The Complainant submits that the Respondent’s current use of the disputed domain name takes unfair advantage of the Complainant’s reputation in order to earn pay-per-click revenue and, further, amounts to a “bait and switch” strategy because its website links include links to the Complainants’ competitors.

The Complainant submits evidence that in November 2017 the Respondent (apparently in response to an approach from the Complainant) requested USD 1 million for the disputed domain name. The Complainant alleges that this is evidence that the Respondent acquired the disputed domain name primarily for the purpose of selling it for an excessive sum.

Finally, the Complainant submits that the Respondent has engaged in a pattern of abusive domain name registrations and cites two WIPO UDRP cases from 2000 and 2002.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent states that it registered the disputed domain name, which comprises a Spanish word meaning “coast” or “shore”, because it consists of a common word with a descriptive meaning.

The Respondent states that it registered the disputed domain name for investment and development over 20 years ago, in 1997. It states that this pre-dated pay-per-click websites or domain parking services and that common word domain names were commercially valuable in themselves. It submits that it has registered other common Spanish and Portuguese words for a similar reason, including <reservas.com>, <saldos.com>, <dominiois.com>, and <livros.com> (all of which appear to have been registered in 1998 or 1999).

The Respondent states that it was not aware of the Complainant, its business or trademarks when it registered the disputed domain name, and did not believe in any event that any single party would be able to claim exclusive rights in the common word which it comprises.

The Respondent submits that the word “costa” is subject to significant third-party use on the Internet which has nothing to do with the Complainant or with cruising. The Respondent claims that a Google search for the term “costa” alone yields 1.36 billion third party results and that other parties who use that term include “Costa del Mar” sunglasses, “Costa Coffee”, “Costa Rica”, “Matt Costa”, “Costa Group” fruit and vegetables, “Costa’s Italian Restaurant and Pizza” and “Costa Foundation”. The Respondent adds that the term COSTA is incorporated in over 200 pending and active trademark registrations in the United States alone and exhibits a list of the relevant records.

The Respondent also points to other generic and country-code Top-Level Domain names (“gTLDs” and “ccTLDs”) which is says are unrelated to the Complainant, including <costa.net>, <costa.org>, <costa.info>, <costa.biz>, <costa.me>, and <costa.us>.

The Respondent cites the case of Cross Optical Group Inc. v. Electric Online, Inc., NAF Claim No. 1449605. It submits that it has already been found by the panel in that case to have rights or legitimate interests in the disputed domain name, on the basis that the disputed domain name comprised a common and generic Spanish dictionary word.

Concerning its use of the disputed domain name, the Respondent states that its uses a GoDaddy domain parking service which uses an algorithm to produce advertising links which “associates the word with certain commercial users”. The Respondent exhibits a web page from “www.costa.com” which contains links to various businesses that do not include cruises. It states that the links are automatically generated and not selected by the Respondent, and that this represents common industry practice and does not render the Respondent’s interest in the disputed domain name illegitimate.

The Respondent denies that its offer to sell the disputed domain name to the Complainant for a price of USD 1 million is evidence of bad faith. It states that it held the disputed domain name for 21 years without offering it to the Complainant or anyone else, and that it was the Complainant who approached the Respondent seeking to purchase the disputed domain name. The Respondent submits that responding to a party’s unsolicited enquiry is not evidence of bad faith.

The Respondent denies that the two adverse UDRP decisions cited by the Complainant are indicative of any pattern of adverse registrations. The Respondent identifies two other cases, from 2004 and 2006, in which the complaints brought against the Respondent were denied.

The Respondent submits that, in the light of the Complainant’s 21 year delay in bringing these proceedings, for which the Complainant has offered no explanation, the Complainant’s claim should be barred under the doctrine of laches. While appreciating that panels under the UDRP will not universally apply the doctrine of laches, the Respondent submits that it should not be lightly dismissed. The Respondent further contends that, even if the Complainant’s case is not time-barred, its long delay in bringing the claim raises an inference that the Complainant did not really believe the Respondent had acted in bad faith.

The Respondent submits that the Complainant has brought a case which it must have known had no merit and in which it has sought to mischaracterize the Respondent. The Respondent seeks a finding of reverse domain name hijacking against the Complainant.

7. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of a European Union trademark for the word mark COSTA. The disputed domain name is identical to that trademark but for the gTLD “.com” which is typically to be disregarded for the purposes of comparison. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Panel notes that, while the Complainant’s European Union trademark referred to above was registered many years after the registration of the disputed domain name, that is irrelevant to the test under paragraph 4(a)(i) of the Policy which is merely a threshold test directed to the question of the Complainant’s standing to bring the proceedings. The respective dates of registration may, however, be relevant to the remaining considerations under the Policy.

B. Rights or Legitimate Interests

The Panel finds that the disputed domain name comprises the term “costa” which is a Spanish word meaning “coast”. It is therefore what is commonly referred to as a “dictionary word”. It is well settled in cases under the UDRP that, while the mere registration of a dictionary word does not of itself give rise to rights or legitimate interests, the use of the domain name for a purposes genuinely related to its dictionary meaning may give rise to rights or legitimate interests. While such use may include a parked page comprising pay-per-click links, such links must genuinely relate to the dictionary meaning of the word or phrase comprising the domain name and must not be used to target a trademark owner’s rights (see e.g. section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Under section 2.11 of the WIPO Overview 3.0:

“Panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint.”

In the view of Panelists Maier and Carabelli, the Respondent’s use of the disputed domain name at the time of the Complaint is more consistent with a targeting of the Complainant’s trademark than with genuine use of the disputed domain name in connection with its dictionary meaning. The Panelists note that the web page exhibited by the Complainant contains links which are overwhelmingly cruise-related and which include at least one link to a competitor of the Complainant. Such use is not consistent with the Respondent’s assertion that the term “costa” also relates to a multitude of business unrelated to cruising. Nor are the Panelists persuaded by the Respondent’s explanation that that the advertising links are selected by an algorithm: as a professional domainer who obtains income on the back of the pay-per-click links in question, the Respondent cannot be indifferent to such links as may impinge on third party rights. Panelists Maier and Carabelli therefore find that, as of the date of the Complaint, the Respondent has no rights or legitimate interests in respect of the disputed domain name. Panelist Brown dissents on this topic (see below).

C. Registered and Used in Bad Faith

In order to prevail in its Complaint, the Complainant must meet the conjunctive requirement of showing both that the disputed domain name was registered and that it has been used in bad faith. It has also been emphasized in recent decisions under the UDRP that bad faith at the time of registration may not be retrospectively attributed to the Respondent merely by reason of currently abusive use of the domain name in question.

In the view of Panel, the Complainant has failed to establish on the balance of probabilities that the Respondent registered the disputed domain name in bad faith. Any such finding would require not only that the Respondent knew (or should be taken to have known) of a relevant trademark in which the Complainant had rights, but also that it registered the disputed domain name with the intention of benefitting unfairly from the goodwill attaching to those rights.

In this case, as of the date of registration of the disputed domain name, the Complainant did not have a trademark consisting of the word COSTA alone. While it is clear that the Complainant had made use of that term in connection with cruises, and had established a reputation in that area, the Panel finds that the term “costa” is not only a Spanish dictionary word, but is also a term that has at all material times been used by numerous other parties in connection with a wide range of business areas. In the circumstances, the Panel does not accept that, as of the date of registration of the disputed domain name, Internet users would have been likely to assume that the disputed domain name referred to the Complainant or its business, or that the registration of the disputed domain name represented an impersonation of the Complainant. While the Complainant has pointed to the date of registration of the disputed domain name being shortly after its takeover by Carnival Corporation had been publicized, this does not affect the Panel’s view that there is no compelling reason to believe that Internet users would assume the disputed domain name to refer to the Complainant, or that the Respondent registered the disputed domain name primarily for the purpose of targeting the Complainant.

Concerning the Respondent’s initial use of the disputed domain name, based on the Panel’s own review of archived web pages at “www.archive.org”, the disputed domain name does not appear to have resolved to any active web page until May 22, 2001 and appears on that date to have resolved to a parking page containing links to a wide variety of goods and services which did not including cruising. The more recent use of the disputed domain name, to resolve to cruising-related links, does not therefore appear to have been present at, or for some years after, the date of registration of the disputed domain name.
Turning to the Respondent’s asking price of USD 1 million for the disputed domain name, it is the view of the Panel that, where an investor in domain names legitimately registers a domain name which appreciates in value, it is reasonable to expect the registrant to seek the full price it believes to be achievable for the sale of that name. The Respondent made no approach to the Complainant for 21 years and quoted the price in question in response to an enquiry from the Complainant. In the view of the Panel, the facts of the case overall are more supportive of an inference that the Respondent registered the disputed domain name because of its Spanish dictionary meaning and in the hope that it would appreciate in value generally, rather than with the specific intention of selling it to the Complainant or a competitor of the Complainant for an excessive price.

In the view of the Panel, therefore, the Complainant has failed to establish that the disputed domain name was registered in bad faith and the Complaint must therefore fail.

8. Reverse Domain Name Hijacking

Under paragraph 15(e) of the Rules:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

While the Panel considers that the present proceedings were misconceived, it accepts that the Complainant may have considered its claim to be justified in view of the Respondent’s more recent use of the disputed domain name in connection with cruise-related links. For that reason, the Panel declines to make a finding that the Complaint was brought in bad faith.

9. Decision

For the foregoing reasons the Complaint is denied.

Steven A. Maier
Presiding Panelist

Anna Carabelli
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: September 27, 2018

DISSENTING OPINION ON RIGHTS AND LEGITIMATE INTERESTS BUT OTHERWISE CONCURRING IN THE DECISION OF THE PANEL

Panelist Brown would decide that the Respondent has established a right or legitimate interest in the disputed domain name. The argument against that conclusion seems to be that even if the Respondent had such a right or interest when it registered the domain name, it lost that right or interest because of its conduct in allowing the domain name to be used for a website that carried links to cruise lines, of which the Complainant is one. The argument therefore proceeds on the assumption that the issue of a respondent’s right to register a domain name is to be determined as at the time when the complaint is filed and that although such a right might exist when the domain name was acquired, it can be lost by subsequent conduct. That would seem to be an unlikely result, at least in the absence of very clear language to justify it and in the absence of a clear statement of exactly what circumstances would justify negating a property right that had already been acquired.

It might be said that there is clear language to that effect to be found in the Policy. Paragraph 4(a)(ii) of the Policy speaks in the present tense so that the allegation put to a registrant is that “you have no rights or legitimate interests”, i.e., at the time the question is being asked, not whether it had them at some earlier time. Moreover, when paragraph 4(c) sets out the indicia that will show such a right or interest, at least one of them is directed to determining if “you are making a legitimate non-commercial or fair use of the domain name…” and not whether the registrant made such a use at an earlier time (emphases added).

It is also true that some UDRP panelists have, rightly or wrongly, found that the entitlement of a respondent is to be assessed at the time the complaint is filed rather than when the domain name was registered. Thus, it was said in Moomin Characters Oy Ltd v. Tapani Vuori, WIPO Case No. D2014-2062 that “The examination of whether or not the Respondent has rights or legitimate interests in the Disputed Domain Name is determined at the time the Complaint is filed.” Likewise, it was said in Fanuc Corporation v. SC Metalkid 2008 SRL and Alunăriței Liliana, WIPO Case No. DRO2016-0005 that “the Respondents’ rights or legitimate interest is typically assessed at the time of the Complaint filing.” There are other decisions to the same effect.

Whatever principle is applied, the one thing that is clear is that the result will be determined by the evidence. In particular, if the evidence is to have the effect that it negates a right or legitimate interest already acquired, it would have to be substantial and unequivocal.

The evidence in the present case shows, first, that the Respondent had the right to register the domain name and it is difficult to see how the Respondent did not have a right to register it. On October 24, 1997 it registered the domain name <costa.com> which is a common, ordinary word. At that date, the Complainant did not have a trademark for COSTA and it had no right to prevent the Respondent or anyone else from registering the domain name. It was not until many years later that the Complainant acquired the only two trademarks that, even today, it has for COSTA by itself, namely its European Union trademark No. 012907754, registered on October 17, 2014 and a Swiss trademark No. 676347, registered on January 22, 2015. Accordingly, when the Respondent registered <costa.com> it was coming to a field that was not occupied by a trademark for COSTA.

The domain name consisted solely of a word that is clearly a common, dictionary or generic word, being the Spanish word for “coast” or “shore”. It would also be apparent to any Internet user that the word was in a European language and that it probably meant “coast” or “shore”, or that it was, alternatively, being used as a surname or given name.

It also cannot be ignored that this very issue of the nature of the word itself has already been before a three-person UDRP panel for consideration in Cross Optical Group, Inc. v. Electric Online, Inc., NAF Claim No. 1449605 where the domain name at issue was, as it is in the present case, <costa.com>. In that earlier case, the complainant said that it had trademarks for COSTA and COSTA DEL MAR with respect to its sunglasses and the respondent raised the same argument as in the present case, namely that it had a right to register it and use it for links of a general nature. The panel unanimously found that “Additionally, because the term COSTA as it appears in the Disputed Domain Name is common and generic in the Spanish dictionary, the Panel finds that Respondent can establish rights or legitimate interests in the Disputed Domain Name pursuant to Policy ¶ 4(a)(ii).” UDRP decisions are not precedents, and cannot bind the parties in the present case, but it cannot be ignored that three panelists have reached the same conclusion on the nature of the word as the Respondent contends in the present case. This is especially so when there is a strong case to show that they were correct in that decision.

The record also shows that when the Respondent in the present case registered the domain name it did not target the Complainant or anyone else in the use that it made of the domain name. The Wayback Machine at “www.archive.org” does not show any use of the domain name between 1997 until 2001, so at least until then, it cannot be said that there was any targeting of the Complainant. From 2001 and for several years thereafter the website was devoted solely to items of general interest with no reference to cruise lines, although there was at least one link or reference to Costa Rica, indicating that the Internet was invoking other generic uses of the word “costa” rather than any involving cruise ships or the Complainant. The site thus consisted solely of general items of interest relating to coasts, of the sort which the Panel in Cross Optical Group, Inc. v. Electric Online, Inc., found to be justified, as they clearly were. For example, the panel observed: “See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes)…”. To paraphrase that observation, the Respondent in the present case was using the domain name as a search tool for Internet users interested in subjects relating to the coast. Such a use is legitimate.

Putting all of this material together, the Respondent did no more than register a dictionary word, as it was entitled to do, and use it for subjects coming within the ambit of the word “coast” or “shore” for Internet users interested in that subject. The task of the Panel is to try to assess the substance and the reality of the use being made of the domain name. When that is done it is fair to conclude that until recent years it has been used solely for links pertaining to coastal matters in general and not cruise lines. This use of the domain name must therefore during that time have been legitimate.

As noted above, it is at least conceivable that on appropriate evidence, the use of a domain name might be so egregious that it negates the right or legitimate interest that a registrant acquired at an earlier date before the complaint was filed. But if that is to be done, it would require much more sustained and consistent evidence implicating the respondent than has been shown in the present case.

It appears that, as this panelist sees the record, the domain name website did not start to have references to cruise lines until towards the end of 2011. Those references to cruise lines could scarcely be described as targeting of the Complainant as the site still ranged over other subjects as well. Moreover, some at least of that interest in coastal matters may have been generated by the fact that the Costa Concordia, one of the Complainant’s ships, went aground off the coast of Italy on its ill-fated voyage on January 13, 2012, which is not in evidence but of which the Panel may take notice, as it generated worldwide interest.

It should also be noted that the decision in Cross Optical Group, Inc. v. Electric Online, Inc., was made on August 6, 2012. On that date, it can be seen from the Wayback Machine that the disputed domain name, the same domain name as is at issue in the present case, was being used for a wide range of links, including COSTA, Internet provider, Internet dating, autos, finances, lifestyle, education, entertainment and shopping, in other words a wide range of items of general interest. This was the evidence before the panel at the time of the decision and it found that the domain name was being used within its generic meaning. It enabled the panel to say:

“Respondent established that it uses the Disputed Domain Name to display descriptive advertising links, as well as to provide website visitors “the opportunity to locate topic[s] related to the descriptive meaning of the word ‘coast.’” Regardless of whether better uses might exist for the Domain Name, the Panel finds that displaying hyperlinks and content related to the descriptive word “coast” at the resolving website are not illegitimate uses.”
The case against the Respondent that it has by some means lost its legitimate interest in the domain name due to the links to cruise lines, revolves around the Complainant’s exhibit referred to in the majority opinion. The screenshot revealed in that exhibit, which appears to be taken from an Italian website, contains, it is true, a link to “Costa”, but the content also deals with matters of general interest that have nothing to do with the Complainant or its business. It consists of a link to “small cruise ship”, an illustration of the letters “www” presumably intended to invoke an Internet activity, the disc tray of a computer and shopping bags with protruding contents. To describe the totality of the content of the website, even during this latter stage, as targeting of the Complainant or trading on its name or engaging in any other untoward conduct would be an exaggeration.

This panelist’s view of the evidence as a whole is that it cannot be said to have negated the right and legitimate interest that the Respondent clearly had in the domain name when it registered it and in the earlier years of its use. Accordingly, it is appropriate to find that the Respondent still has that right or legitimate interest in the domain name.

Apart from the issue of rights and legitimate interests this panelist concurs with the decision of the Panel.

The Hon Neil Brown Q.C.
Panelist
Date: September 27, 2018

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